Appeal 2006-3235
Reexamination Control No. 90/006,696
1 Burgess’s Rule 131 declaration (Reexam. Request Attachment 1).
2 40. Appellant correctly notes (Br. 16) that Mr. Burgess’s Rule 131
3 declaration, filed with the Reexamination Request, implicitly limits the
4 relevant field of endeavor to failure analysis by asserting that the subject
5 matter of Claim 11 would have been “obvious to a person having ordinary
6 skill in the field of failure analysis, generally, or hot spot detection,
7 specifically” (Burgess Decl. at 7, para. 27) and “obvious to a person having
8 ordinary skill in the field of fault analysis” (id. at 12, para. 44).
9 The Reexamination Request
10 38. As noted by Appellant (Br. 16), the Reexamination Request
11 (signed by Requester’s counsel, Mr. Westerlund) asserts: “The ‘857 patent
12 discloses a particular method of detecting hot spots on a die or wafer under
13 test, also referred to as a Device Under Test (‘DUT’). Hot spots are
14 produced at locations on a failed integrated circuit (“IC”) wafer or die . . . .”
15 Reexam. Request 1 (our emphasis).
16 B. Principles of law
17 The relevant field of endeavor must be determined before the claims
18 can be construed. See Phillips, 415 F.3d at 1313, 75 USPQ2d at 1326
19 (“claims are construed . . . as they would be understood by persons in the
20 same field of endeavor”).
21 As explained in In re Bigio, 381 F.3d 1320, 72 USPQ2d 1209 (Fed.
22 Cir. 2004), addressing the “field of endeavor” test for determining whether
23 cited prior art is analogous27:
27 As explained in Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212:
23
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